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Texas Digital Systems: The Use of Dictionaries in Claim Construction

Texas Digital Systems: The Use of Dictionaries in Claim Construction. Jennifer C. Kuhn, April 16, 2003 Law Office of Jennifer C. Kuhn jenkuhn@austin.rr.com 512-502-1334. Main Points of Texas Digital 308 F.3d 1193 (Fed. Cir. 2002).

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Texas Digital Systems: The Use of Dictionaries in Claim Construction

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  1. Texas Digital Systems:The Use of Dictionaries in Claim Construction Jennifer C. Kuhn, April 16, 2003 Law Office of Jennifer C. Kuhn jenkuhn@austin.rr.com 512-502-1334

  2. Main Points of Texas Digital308 F.3d 1193 (Fed. Cir. 2002) • Dictionaries are not extrinsic evidence, and judges may look to dictionaries sua sponte at any stage of the litigation. 308 F.3d at 1202. • When determining the meaning of an ambiguous claim term, judge should look to dictionary first, and then look to the specifications in order to avoid importing limitations into the claims. 308 F.3d at 1204.

  3. Background • Texas Digital (TDS) sued Telegenix on four patents “directed to the methods and devices for controlling the color of pixels in a light emitting diode (“LED”) display.” 308 F.3d at 1197-98. • Jury returned a verdict of infringement and willfulness. 308 F.3d at 1201. • Damages, enhanced damages and interest totaled nearly $40 million. 308 F.3d at 1201.

  4. Background (cont.) • Telegenix’s appeal focused on claim construction, and expert testimony. • Dictionaries were used during claim construction, but were not subject of tremendous controversy during District Court proceedings. 2000 WL 1801849 (Dec. 6. 2000 N.D. Tex.).

  5. Background (cont.) • District Court “set up” the Federal Circuit’s opinion by: • stating that intrinsic evidence should be reviewed before extrinsic (and excluding any discussion of dictionaries); • stating that if claim term is ambiguous, with no meaning in the prior art, meaning must be found elsewhere in the patent; and • stating that court cannot review extrinsic evidence if spec or file history unambiguously defines scope of claims. Id., at *2.

  6. Result of District Court’s Rule • Claim terms would be defined by specification if terms were ambiguous, not only if patentee acted as his own lexicographer; • No extrinsic evidence could be used to resolve claim ambiguity if specification gave enough meaning to claim for construction purposes.

  7. Federal Circuit’s Response:The Contours of Claim Construction • “Educational” section entitled “The Contours of Claim Construction” precedes the claim construction analysis: • In construing claims, focus must begin, and remain centered on the language of the claims themselves, • Claim terms “mean what they say” and have ordinary meaning attributed by POSIA • Claim terms receive full range of ordinary meaning (as understood by POSIA). 308 F.3d at 1201-02.

  8. Texas Digital Issue 1: Due Process • If a District Court of Federal Circuit panel selects a dictionary definition sua sponte, as Texas Digital allows, doesn’t this deprive the parties the opportunity to litigate the issue of whether or not the definition is appropriate, and violate the parties due process rights?

  9. Issue 1 as Arising in Texas Digital • Two patents contained claim limitation “repeatedly, substantially, simultaneously, activating.” • District Court construed “repeatedly” as repeating, and “substantially, simultaneously activating” as during some portion of the period defined by repeatedly, the two separate lights are on at the same time. 308 F.3d at 1205. • Federal Circuit found that this approach ignored meaning of “activating.” 308 F.3d at 1206.

  10. Issue 1 as arising in Texas Digital, (cont.) • Federal Circuit turned to definition of “activate” (not “activating”) in Modern Dictionary of Electronics (6th ed. 1984). 308 F.3d at 1206. • Definition: “To start an operation, usually by application of an appropriate enabling signal.” • Claim phrase then construed to mean during some portion of the period defined as “repeatedly” the two separate lights are turned on at the same or nearly the same time. Id.

  11. Issue 1 as arising in Texas Digital (cont.) • The Modern Dictionary of Electronics was not in the record below, nor, apparently, was it presented by either party on appeal. • Neither party had opportunity to provide rebuttal definition of “activating,” or challenge use of definition of “activate” instead of “activating.”

  12. Definitions: question of law or fact? • If a question of fact, court could take judicial notice. Title 28, Rule 201 addresses judicial notice of adjudicative facts: • Fact cannot be subject to reasonable dispute; • Judicial notice may be taken at any stage of the proceeding; • Party is entitled (upon timely request) to an opportunity to be heard as to the propriety of taking judicial notice.

  13. Law or Fact? (cont.) • Thus, dictionary definition could be subject of judicial notice as a fact if met other requirements and Federal Circuit created procedure for parties to have an opportunity to be heard. • ABA IP Section Appellate Practice Committee has recommended just such an approach. • Unlikely that this would be adopted.

  14. If a question of law, the Federal Circuit would not need to take judicial notice. However, it is not clear that identifying relevant dictionary definitions, sua sponte, is permissible even if this is a question of law. Opinion equates use of dictionaries in claim construction to their use in statutory construction and contract interpretation. 308 F.3d at 1203. Law or Fact? (cont.)

  15. Supreme Court’s Use of Dictionaries: Law or Fact? (cont.) • The Supreme Court frequently uses dictionaries to define terms during statutory construction in civil matters: • In Pennoyer v. Neff, 95 U.S. 714 (1878) the Supreme Court used an early edition of Webster’s to define “editor.” • In National Endowment for the Arts v. Finley, 524 U.S. 569 (1998) the Supreme Court defines “taking into consideration” by reference to Webster’s New International.

  16. Supreme Court’s Use of Dictionaries: Law or Fact? (cont.) • Black’s Law Dictionary also a favorite of the Supreme Court. • Dictionaries, as well as other standard literary reference works, relevant judicial pronouncements on the ordinary meaning of such words, and prior legal history may be used to interpret a statute. See Ernst and Ernst v. Hochfelder, 425 U.S. 185, 199 (1976); Pittston Coal Group v. Sebben, 109 S. Ct. 414, 420 (1988); and United States v. Ron Pair Enters. Inc., 109 S. Ct. 1026, 1030-31 (1989).

  17. Conclusion: Law or Fact? • If a question of fact (contra Markman) then District Court and Fed Cir would have to introduce a new procedure to allow parties to be heard on definition. (Unlikely) • If a question of law, (per Markman) then Federal Circuit has some additional freedom to refer to the dictionaries of its choice. Each patent is treated like the prima facie interpretation of a new statute.

  18. Texas Digital Issue 2: • How do parties and District Court judges determine which dictionaries should be used to construe claims? • (The answer to this issue implicates a number of other questions.)

  19. Issue 2 as arising in Texas Digital • Modern Dictionary of Electronics (6th ed. 1984) was cited for patents filed in October 1986, and March 1989. • This dictionary is (apparently) not a common electronics dictionary. • Penguin Dictionary of Electronics, (3d ed. 1998) did not include the terms “activate” or “activating.” • The New IEEE Dictionary (1993) does not contain the term “activating” and defines “activate” by reference to “assert.”

  20. Which dictionary? • 1. A dictionary publicly available at time that patent issued, not when filed. • 2. A dictionary with a definition that harmonizes with the context of the art in question, the specification, and the file wrapper. • 3. All dictionaries with definitions that harmonize with the art, specification and file wrapper. • 4. No dictionary if the specification or prosecution history rebuts the presumption that the term carries its ordinary and customary meeting.

  21. 1. Publicly available at time of issuance. • “Dictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art.” 308 F.3d at 1202-03. (citing Dow Chem. Co. v. Sumitomo Chem. Co. 257 F.3d 1364, 1372-73 (Fed. Cir. 2001)).

  22. Which dictionary? (cont.)2. Definition with right context. • “Because words often have multiple dictionary definitions, some having no relation to the claimed invention, the intrinsic record must always be consulted to identify which of the different possible dictionary meanings of claim terms in issue is most consistent with the use of the words by the inventor.” (citing Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243 (Fed. Cir. 1998)).

  23. 2. Context • The use of the intrinsic record to determine context will help to determine • if the term has a special meaning in the art (meaning any definition from a technical dictionary will supercede one from a standard dictionary); • which of potential definitions from relevant dictionary are appropriate.

  24. Which dictionary? (cont.)3. All definitions with right context. • “ If more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all such consistent meanings.” 308 F.3d at 1203. (citing Rexnord Corp. v.Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001)).

  25. 3. All definitions with right context. • Claim may be construed to cover all definitions that harmonize with the intrinsic evidence. • Broader scope appears to be permissive, not mandatory. • Prudent approach may be to provide multiple definitions to provide the broadest possible coverage.

  26. Which dictionary? (cont.)4. None if spec. rebuts ord. mng. • “Moreover, the intrinsic record also must be examined in every case to determine whether the presumption of ordinary and customary meaning is rebutted. Indeed, the intrinsic record may show that the specification uses the words in a manner clearly inconsistent with the ordinary meaning reflected, for example, in a dictionary definition. In such a case, the inconsistent dictionary definition must be rejected.” 308 F.3d at 1204. (citing Renishaw, 158 F.3d at 1250).

  27. 4. Specification can rebut def’s. • Specification is still the best evidence, as stated in Vitronics. The specification can trump a dictionary, but a dictionary cannot trump specification. • Same principle applies for claim scope clearly abandoned during prosecution

  28. Conclusion • Texas Digital is really a product of a particular District Court opinion that prompted a comprehensive tutorial from the Federal Circuit. • All of the particular issues relating to dictionary use came from earlier decisions, merely summarized in this decision.

  29. Questions • Jennifer C. Kuhn • jenkuhn@austin.rr.com

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